Thailand Intellectual Property – Trademarks
Basic Overview of Thailand’s Trademark Registration System
(THAILAND TRADEMARK NOW FAQ Chapter 3)
WELL KNOWN STATUS
There exists a system in place in Thailand, where a certain ‘Well Known Status’ is conferred upon a registered Trademark that bestows special, extended protection upon it – cloaking it with a special exclusivity that serves as both a shield and a sword.
42. Is there any special provision in Thai Trademark Law providing special privileges to ‘Well-Known’ Trademarks?
What is the ‘Well Known Status’ that is attainable for Trademarks in Thailand?
Trademark owners can get their Trademarks registered as ‘Well Known’. This ‘Well-Known Status’ had been introduced in Thailand vide the Regulation of the Department of Intellectual Property (“DIP”) Regarding Well-Known Marks B.E. 2548 (2005).
43. Is my Trademark not ‘Well Known’ without the ‘Well Known Status’ in Thailand?
Does my Trademark lose out on the protection of ‘Well Known’ Trademarks if it is not registered as ‘Well Known’?
No. The Trademark Act (“TA”) and general Trademark practice also protects ‘Well Known’ Trademarks without the ‘Well Known Status’ by preventing the registration and/or use of Trademarks which are identical with or confusingly similar to Well Known Trademarks (without the need for conferment of the ‘Well Known Status’) [For instance, Section 8 (10) TA 1991].
However, establishing an unregistered ‘Well Known Status’ requires significant proof in legal proceedings. In such proceedings then, the Trademark owner cannot be certain that it can prevent the registration or use of a third party’s Trademark due in view of this heavy burden of proof. Conversely, where a Trademark owner gets its Trademark registered as Well Known, it has much greater legal and commercial certainty and control that it is able to prevent unrightful registration and use of its Well Known Trademark.
44. What are the criteria to satisfy for an application for ‘Well Known Status’ in Thailand?
What are the requirements to satisfy for a Mark to be registered as Well Known?
A Well Known Trademark includes [Chapter 11 Clause 7, Regulation of the DIP Regarding Well-Known Marks B.E. 2548 (2005)]:
- A Trademark, Service Mark, Certification Mark, Collective Mark, or any other Mark used in respect of things independent of any particular type of goods and / or services
- A registered or an unregistered Mark
- A Mark identical with a Mark that has already successfully applied for ‘Well Known Status’
- A Mark that has been extensively and widely used in respect of the goods or services by the way of sale, use, advertisement, or by wide use of other means in good faith, continuously throughout till present
- A Mark that has been extensive and regularly used in good faith, which has become widely known to the general Thai public or the relevant Thai public to which the mark is directed, which may have been used in Thailand or in any foreign country
- A Mark that has been used to such a degree that it has become ‘Well Known’ and recognized among Thai consumers
- A Mark that has been used by the owner directly or through its representatives or licensees
- Trademark owners are advised to apply for the exact Trademark in shape, size, form and content used and registered most extensively, and the evidence submitted with the application should be likewise
45. Should I seek ‘Well Known Status’ for my Trademark in Thailand?
Should I apply for ‘Well Known Status’ registration for my Trademark in Thailand?
The first thing to bear in mind will be that such an application requires greater effort and expense as compared to a normal Trademark application. The Trademark owner has to consider whether the potentially ‘Well Known’ Trademark has in fact developed significant consumer recognition. If such recognition is indeed substantial, the evidential burden of this application [Certainty so as compared to invoking the ‘Well Known’ status as a defence] will likely be satisfied and the applicant will reap the status’ significant benefits.
46. What is the evidentiary threshold to succeed in a ‘Well Known Status’ application in Thailand?
Is it difficult to obtain the ‘Well Known Status’ for a Trademark?
- Although a ‘Well Known Status’ application generally requires less proof than raising the same as a defence, there is a high burden of proof required. This is accentuated by the fact that there is a short period of time to supply evidence to the application that it has been filed. Bearing this in mind, the applicant has to have well considered the available evidence and his gathering of evidence should be near completion before filing takes place.
- The type and amount of evidence will necessary vary according to a variety of factors such as the industry in which the Trademark is being used, the length and extent of previous use, and whether the proposed Trademark is inherently distinctive as opposed to a common descriptive term or design
- Generally, the more evidence submitted, the better the chances. However, the bulk of evidence has to be presented in a coherent and concentrated manner, so as to allow the Registrar to clearly see the extent of the Mark’s recognition.
47. What are the chances of succeeding in registering a Trademark as ‘Well Known’ in Thailand?
Is it easy or difficult for Trademarks to successfully obtain the ‘Well Known Status’?
This would essentially have to depend on the evidence made available to the Board.
48. What is the process for submitting evidence for a ‘Well Known Status’ application in Thailand?
How can I furnish evidence for my application to register my Trademark as ‘Well Known’?
The applicant has 60 (sixty) days from the application date to complete its evidentiary submission.
The necessary information should be submitted in the form of affidavits, with supporting documents and evidence attached.
49. What type of evidence is generally furnished for a ‘Well Known Status’ application in Thailand?
What kind of evidence should I submit toward obtaining a ‘Well Known Status’ for my Trademark?
It is necessary for the Trademark owner to carefully conssider what evidence should be furnished to convince the Board that its Trademarks are ‘Well Known’.
Generally, Regulation guidelines [Chapter II Clause 8, Regulation of the DIP Regarding Well-Known Marks B.E. 2548 (2005)] as to what supporting evidence are to be used provide a compass:
- Documents presenting any public acknowledgement such as magazines, journals, newspapers, catalogues, etc.
- Proof of sales such as receipts, invoices, export / import documents, tax invoices, etc.
- Proof of marketing activity such as advertisements, promotions, and wholesale / retail marketing activity
- Documents showing the size of the enterprise
- Any other evidence showing use or registration of the Mark, its reputation, activity taken to protect and enhance the Mark, evaluations of the Mark, sales rankings of the products sold under the Mark, honors / recognition received by the products sold under the Mark, certificates received from acceptable organization, internet marketing / sales / advertising, etc.
- Additionally, the applicant is advised to submit evidence of:
- Sales in Thailand and on a worldwide scale
- Length of Use in Thailand and on a worldwide scale
- Trademark Registrations in Thailand and on a worldwide scale
- Recognition as a ‘Well Known’ Trademark in other countries
- Direction of sales, marketing and advertising
- Media advertising and marketing
- Articles, news reports, and other reports attesting to its wide use and recognition
- Credible testimonials from people in relevant industries, consumers and experts
- Consumer surveys
50. Will I get a chance to submit personally before the Board?
Is there a hearing or presentation involved in this process?
51. Can I appeal against the Thailand Trademark Board’s decision to not register my Trademark as ‘Well Known’?
What recourse is available against an unfavorable Board’s decision to not confer the ‘Well Known Status’ upon my Trademark?
An Appeal can be lodged within 60 (sixty) days from the receipt of the Board’s Notice of Rejection to the Director-General of the DIP whose decision is final.
52. What are the benefits and privileges conferred by the ‘Well Known Status’ to my Trademark in Thailand?
What is the extent of the protection conferred by the ‘Well Known Status’?
- The prevention of identical and confusingly similar Trademarks from being registered for any goods or services – even non-competing goods / service and goods / services from different classifications.
- The status is an overall deterrent against infringers and counterfeiters
- Increase in the value, trust and accreditation attributed to the Trademark from a marketing perspective
- The automatic attribution of ‘Well Known Status’ and with it a strong defence against opposition / cancellation, criminal actions and litigation
- The penultimate of shielding against cease and desist letters with the status
- Generally, allowing the owner to utilize its Trademark to its full extent with greater legal and commercial certainty
- This status represents a valuable asset to the owner that can be enhanced and protected
.. to be continued
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For more information on the foregoing, please contact the author JOEL LOO SEAN EE, the Bangkok-based Senior Regional Counsel at Kelvin Chia Thailand and a member of Kelvin Chia Partnership’s Regional Practice Group at Joel.Loo@KCPartnership.com.
This article is published to provide general information only and is not offered as specific advice on any particular matter – This information is to be taken subject to proper consultation with a lawyer.